Wi-LAN, Inc.

Patent Trials and Appeals Board

Jun 30, 2020

2019001326 (P.T.A.B. Jun. 30, 2020)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
15/160,065 05/20/2016 Kenneth L. Stanwood 112174-010CT4 4144
27189 7590 06/30/2020
PROCOPIO, CORY, HARGREAVES & SAVITCH LLP
525 B STREET
SUITE 2200
SAN DIEGO, CA 92101
EXAMINER
SEFCHECK, GREGORY B
ART UNIT PAPER NUMBER
2477
NOTIFICATION DATE DELIVERY MODE
06/30/2020 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
PTONotifications@procopio.com
docketing@procopio.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte KENNETH L. STANWOOD, STANLEY WANG,
and ROBERT M. JOHNSON
____________

Appeal 2019-001326
Application 15/160,065
Technology Center 2400
____________

Before JOHNNY A. KUMAR, JAMES W. DEJMEK, and
STEPHEN E. BELISLE, Administrative Patent Judges.

BELISLE, Administrative Patent Judge.

DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) from a Final Rejection of
all pending claims, namely claims 4 and 5. Appeal Br. 5, 7. We have
jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.

1 Throughout this Decision, we use the word “Appellant” to refer to
“applicant” as defined in 37 C.F.R. § 1.42 (2017). Appellant identifies the
real party in interest as Wi-LAN Inc., a subsidiary of Quarterhill Inc.
Appeal Br. 3.
Appeal 2019-001326
Application 15/160,065

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STATEMENT OF THE CASE
The Claimed Invention
Appellant’s invention relates generally to “packet data
communications systems, and reformatting data in such systems before
transmitting the data through a link.” Spec. ¶ 2.
Claim 4, reproduced below, is illustrative of the subject matter on
appeal:
4. A mobile subscriber unit for a wireless communications
system operable to pack and fragment variable length service
data units (SDUs) into variable length protocol data units
(PDUs), the mobile subscriber unit comprising:
a processor addressable storage medium;
at least one processor in communication with the processor
addressable storage medium and configured to:
pack data of a first SDU into a payload area of a PDU of an uplink
frame, the PDU of a length different than the length of another
PDU of another uplink frame;
on a condition that data of a second SDU fits in a remaining
payload area of the PDU, pack the data of the second SDU into
the remaining payload area of the PDU, the second SDU of a
length different than the length of the first SDU; and
on a condition that the data of the second SDU does not fit in the
remaining payload area of the PDU, pack a first fragment of the
data of the second SDU into the remaining payload area of the
PDU.
Appeal Br. 13 (Claims App.).
The Applied References
The Examiner relies on the following references as evidence of
unpatentability of the claims on appeal:
Kordsmeyer US 6,963,751 B1 Nov. 8, 2005
Pezeshki-Esfahani US 6,711,176 B1 Mar. 23, 2004
Appeal 2019-001326
Application 15/160,065

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The Examiner’s Rejection
The Examiner rejected claims 4 and 5 under pre-AIA 35 U.S.C.
§ 103(a) as being unpatentable over the combination of Kordsmeyer and
Pezeshki-Esfahani. Final Act. 2–5.
ANALYSIS2
Appellant disputes the Examiner’s findings that the combination of
Kordsmeyer and Pezeshki-Esfahani renders obvious independent claims 4
and 5. Appeal Br. 7–11; Reply Br. 2–4.
Appellant argues, inter alia, claims 4 and 5 involve “combin[ing]
variable size PDUs with packing and fragmenting of variable sized SDUs”
(Reply Br. 4), and that there is no basis in the record, but for impermissible
hindsight, for modifying Kordsmeyer to meet the claim limitations at issue
(Appeal Br. 10–11). See Reply Br. 4 (“[I]t is only through improper
hindsight in view of Appellant’s disclosure that one of ordinary skill would
think to combine variable size PDUs with packing and fragmenting of
variable sized SDUs as set forth in the claims on appeal.”). On the present
record, we find Appellant’s argument persuasive, as discussed below.
Kordsmeyer discloses packing of data of variable-length SDUs into
the payload area of PDUs (see Appeal Br. 8 (citing Kordsmeyer, col. 7:1–
13); Ans. 6–7 (citing Kordsmeyer, Fig. 2)), but it does so in the context of
fixed-size PDUs, and does not disclose packing of data of variable-length

2 Throughout this Decision, we have considered Appellant’s Appeal Brief
filed October 2, 2018 (“Appeal Br.”); Appellant’s Reply Brief filed
November 29, 2018 (“Reply Br.”); the Examiner’s Answer mailed
November 2, 2018 (“Ans.”); the Final Office Action mailed November 3,
2017 (“Final Act.”); and Appellant’s Specification filed May 20, 2016
(“Spec.”).
Appeal 2019-001326
Application 15/160,065

4
SDUs into the payload area of variable-length PDUs, as recited, for
example, in claim 4 (see Ans. 7 (“Kordsmeyer is only admittedly deficient in
showing such packing and fragmenting applied to variable-length PDUs.”);
Final Act. 3 (“Kordsmeyer discloses mapping to fixed length PDUs in a
DECT system rather than variable length PDUs.”); Appeal Br. 9
(“Kordsmeyer’s need to pack and fragment is driven by the case where the
SDUs are of a variable size and the PDUs (per the DECT standard) are of a
fixed size.”)). Nevertheless, the Examiner finds “Kordsmeyer also
contemplates application in an ATM (Asynchronous Transfer Mode)
environment,” and based on this finding, introduces Pezeshki-Esfahani for
teaching varying PDU sizes in such an environment, and determines the
skilled artisan “would recognize the packing and fragmenting efficiencies
gained in Kordsmeyer would also be applicable to variable-length PDUs,
such as the frame-based ATM in [Pezeshki-Esfahani].” Ans. 7–8 (emphases
added); see Final Act. 3. We find the Examiner’s rationale here deficient.
Although Kordsmeyer mentions “ATM cells,” it does so only in the
context of describing “Related Art,” namely, European Patent EP 0708576,
and describes this reference as disclosing “a method for the transmission of
payload data in telecommunication systems where the concern is how
payload data blocks fashioned as CDMA data packets can be transmitted in
ATM cells fashioned as data units.” Kordsmeyer, col. 6:10–29. Appellant
argues “[Kordsmeyer] contains no reference to or suggestion of
contemplating the application of Kordsmeyer’s fixed length PDU DECT
invention in an ATM environment. ATM is not even mentioned anywhere
else in Kordsmeyer.” Reply Br. 3 (emphasis added); see Appeal Br. 9–11.
We find Appellant’s argument persuasive, and that the Examiner has not
Appeal 2019-001326
Application 15/160,065

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provided sufficient evidence or technical reasoning to explain clearly why
the skilled artisan, absent hindsight, would recognize Kordsmeyer to be
applicable to variable-length PDUs, such as in an ATM environment. See
Sensonics, Inc. v. Aerosonic Corp., 81 F.3d 1566, 1570 (Fed. Cir. 1996)
(“To draw on hindsight knowledge of the patented invention, when the prior
art does not contain or suggest that knowledge, is to use the invention as a
template for its own reconstruction—an illogical and inappropriate process
by which to determine patentability.” (citing W.L. Gore & Assoc. v. Garlock,
Inc., 721 F.2d 1540, 1553 (Fed. Cir. 1983))). The Examiner also has not
persuasively shown how the other cited art remedies this deficiency.
Because we find this issue dispositive here, we do not address Appellant’s
other arguments.
Accordingly, we do not sustain the Examiner’s rejection under pre-
AIA 35 U.S.C. § 103(a) of independent claims 4 and 5.
DECISION SUMMARY
In summary:
Claims
Rejected
pre-AIA
35 U.S.C. §
Reference(s)/
Basis Affirmed Reversed
4, 5 103(a) Kordsmeyer,
Pezeshki-Esfahani
4, 5

REVERSED